Intellectual Property

Intellectual Property (“IP”) is a rough grouping of several different types of personal property including patents, copyrights, trademarks and trade secrets. Each of these types of property has its own body of law which defines what is protected, who is protected and what uses non-owners can make of others’ IP.

Patents

Generally speaking, patents protect inventions. These inventions can range from new and useful chemical compounds or drugs to machines or processes. A patent is a “property right granted by the Government of the United States of America to an inventor ‘to exclude others from making, using, offering for sale or selling the invention throughout the United States or importing the invention into the United States’ for a limited time in exchange for public disclosure of the invention when the patent is granted.” USPTO, Glossary of Terms, http://www.uspto.gov/main/glossary/index.html. In order to be patentable, an invention or idea must fit into one of the subject matter categories defined by the statute, and the invention or idea must be new, useful and non-obvious. The novelty requirement is very strong and prevents patentability for many inventions. Essentially, an idea is not considered novel if others know about it; if, for example, there has been a public disclosure. This means that presenting at a conference, writing a paper, pitching a new business, etc., can result in the loss of a potential patent if proper care is not taken. While in the U.S. there is a certain grace period after a public disclosure to file a patent application, a public disclosure (even if it takes place in the U.S.) will result in the loss of patentability in much of the rest of the world. Patent protection generally lasts for 20 years from the date of the filing of a patent application. The University has a policy in place which addresses such things as ownership, royalty sharing, disclosure obligations, and other procedures.

Copyrights

Copyright law protects original works of authorship which have been placed in tangible form for a limited period of time. The owner of a copyrighted work has the right in many instances to prohibit others form using the work. The work must be original or new and can be a literary work; musical work (and accompanying words); dramatic work (and accompanying music); pictorial, graphic or sculptural work; motion picture and other audio-visual work; sound recording; or architectural work. 17 USC 102.

Ownership generally vests in the creator except in certain employment or work for hire situations. Protection for works created on or after January 7, 1978, lasts for the life of the author plus 70 years (in the case of a work authored by a business entity, the term is 95 years from publication or 120 years from creation, whichever is shortest). The copyright term for works created prior to January 7, 1978, will vary depending on when the work was created. A chart describing the duration of copyrights can be found here.

The University has a separate policy governing the ownership and creation of copyrighted works. Please call the Office of the University Attorney or the Mississippi Law Research Institute (662-915-7775) for a copy of this policy.

The copyright laws allow certain uses of another person’s copyrighted work. At the University, faculty frequently make use of the classroom teaching and the fair use exceptions. The classroom teaching exception (17 USC 110) allows the use of copyrighted materials “by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution in a classroom or similar place” if the copy being used is lawfully made. This provision only applies where the class and teacher are all in the same room at the time of the use.

Fair use is by far the broadest right granted to users of copyrighted materials. This doctrine (17 USC 107) provides that users can make certain “fair uses” of copyrighted works. The provision (which one should review if seeking to apply this exception) enumerates many uses which could be fair use, such as news reporting, comment, teaching and research, but imposes a four-part test to determine if a specific use actually rises to fair use. The four factors to consider are:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 USC 107. There are no accurate “rules of thumb” for applying this test – no word limit when quoting from texts, for example. All of the factors are to be applied equally in theory, though the fourth factor often causes the scale to tip one way or the other. If you need assistance in this analysis, please contact the Office of the University Attorney. There are many good resources that may help with this inquiry.

Trademark

A trademark is a word, phrase, symbol or design (or combination thereof) used to identify the source of goods or services. Examples are “Apple Computers” or, here at the University, “UMAA.”

All that is required to acquire rights to a trademark is that the mark be used in commerce. Neither federal nor state registration is required though both are available. Nevertheless, Federal registration serves quite a few strategic and legal purposes and is recommended.

Ownership of a mark allows its owner to exclude others from using the mark or similar marks in a confusingly similar way. The symbol (TM) or _ can be used by anyone claiming a trademark while the (R) or _ can be used only with federally registered marks.

Trade Secret
Trade secrets are secrets which are used in a business or trade. The formula to Coca-Cola, for example, was long protected as a trade secret. Trade secret protection varies from state to state. Generally, however, in order to receive legal protection, the information must be a secret, it must provide some level of competitive advantage, and it must relate to trade or business. The Mississippi Uniform Trade Secrets Act can be found at Miss. Code Ann. 75-26-1 et. seq.